The Defenestration of Bayport

This item’s title would be a good name for a “Hardy Boys” book, but no, we’re talking about Bayport, Minnesota, home of the Anderson Corporation, not the home town of those All-American detective brothers. Still, a mystery remains: Is it easier to convince yourself an argument passes the “red-face test” or “smell test” before the Trademark Trial and Appeals Board than in “regular court”?

You’d think so from this stinker: the company that makes Anderson Windows, in a failed cancellation proceeding, trying to convince the Board that its trademark for PERMA-SHIELD windows is likely to be confused with the same mark for “coatings sold as a component part of power saw blades.” The blades are made by a tool company called Freud. Anderson’s argument: Well, they sell both of them at Home Depot, right?

Wrong. John Welch explains:

Andersen posited two situations in which a consumer might purchase both products: first; a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks; second, a building contractor who sees both products displayed in a small lumberyard showroom. The Board, however, found Andersen’s claim of likely confusion to amount to “only a speculative, theoretical possibility.”

We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.  Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).

Finding the connection between petitioner’s goods and respondent’s goods to be “so tenuous that the public would not view the goods as having a common source, even when sold under identical marks,” the Board dismissed the petition for cancellation.

I’m sorry, I have to repeat this one: “a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks.” That is classic.

Now that I’ve had my fun and Freud has reaped this joyous result, what, really, can we learn from this?

I don’t believe the Anderson lawyers ever really thought this argument was a winner. I’m not suggesting bad faith, Heaven forfend, but I am suggesting this flimsy claim was filed in the anticipation of a “business solution.” In other words, Anderson’s guess was that Freud would fold. Freud, wisely, relied on its analysis, and enjoyed the catharsis.